Here is our recap of last week’s top IP developments including summary of the posts on the JioHotstar domain name dispute and DHC’s order on the Complan disparagement dispute. This and a lot more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
<JioHotstar.com>: A Clever Narrative for Cybersquatting
The JioHotstar domain name dispute between Reliance and ‘A Dreamer’ is the latest talk of the town, with the latter asking for £93,345 from the corporate house in exchange for the <jiohotstar[dot]com> domain name. Akshay Ajayakumar explains how this is a textbook example of cybersquatting.
Assessing the Free Speech v. Disparagement Debate in the DHC’s “Complan” Case Order
The recent Complan – influencer order raises some pressing questions around where the balance between disparagement and free-speech lay. The DHC’s interim injunction seems to overlook certain key factors concerning disparagement, as well as shift the burden of proof in such cases. Manya Gupta examines this order further.
Other Posts
Experts and Calcutta High Court IPRD Rules, 2024; A Critique and Discussion
The Who, What, and How of “Experts” in the new Calcutta High Court IPRD Rules – Malobika Sen raises some interesting points for discussion, including the need for some more cohesive rules on the engagement of Experts in IP matters.
National Law University, Jodhpur’s Journal of Intellectual Property Studies is inviting original, unpublished manuscripts for its upcoming issue (Volume IX, Issue I). The last date for submissions is January 10, 2025. For further details, please read the journal’s call for papers above.
NLU Delhi Invites Applications for the Position of Academic Fellow (Apply by November 04)
[Sponsored Post] NLU Delhi is inviting applications for the position of Academic Fellow for their Joint Masters/LL.M in Intellectual Property Law & Management Programme. The last date to apply is November 04, 2024. For more detail please read their announcement above.
Case Summaries
L Oreal vs Graphics Traders on 19 October, 2024 (Delhi District Court)
The plaintiff filed a suit alleging import of counterfeit cosmetics by the defendant, bearing its trademarks- “MAYBELLINE” and “BABY LIPS”. No written statements were filed by the defendants. Assessing the plaintiff’s evidence, the Court held that it was successful in establishing that the defendant imported the impugned goods and granted a permanent injunction in favor of the plaintiff.
L Oreal vs M/S Reliable Enterprises on 19 October, 2024 (Delhi District Court)
The plaintiff filed a suit alleging import of counterfeit cosmetics by the defendant, bearing its L’OREAL trademarks. No written statements were filed by the defendants. Assessing the plaintiff’s evidence, the Court held that it was successful in establishing that the defendant imported the impugned goods and granted a permanent injunction in favor of the plaintiff.
Sri Narasus Coffee Company Private Ltd vs M/S. Narasus Dairy on 19 June, 2024 (Madras High Court)
An appeal was filed by the appellant against an interim injunction restraining them from using the “Narasus” trademark. The parties agreed that they would prefer an expedited trial in the case and thus without expressing any opinion on merits, the Court directed for the same and ordered the interim injunction to continue till the suit is decreed.
Zahoor Hussain Bhat v. Mr. Nadeem Nazir and Anr. on 15 October, 2024 (Delhi District Court)
The plaintiff alleged trademark and copyright infringement of his registered mark “KHATOON” by the defendants, who used an allegedly similar mark “SHAHI KHATOON.” The Court held that the defendants had copied the plaintiff’s mark and passed off their products as those of the plaintiff. The Court issued a permanent injunction restraining the defendants from using the infringing mark and awarded damages and costs in favor of the plaintiff.
M/S Crocs Inc. USA v. M/S Unicon Overseas & Ors., on 19 October, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction and other reliefs against the release of counterfeit footwear bearing its trademark “CROCS.” The Court held that the goods detained by Customs were counterfeit and directed the Customs authorities to destroy the seized goods.
T.Kartheeka vs M/S.Bagiya Lakshmi Enterprise on 28 June, 2024 (Madras High Court)
The petitioner is the owner of the copyright in respect of Telugu remake and dubbing rights of Tamil film ‘Agni Natchathiram”. They alleged infringement of their Copyright by the Defendants who produced a Telugu film titled ”Waltair Veerayya” (Telugu, Colour) with identical storyline and sequences of his movie. The Court noted that all the defendants have been absent from the proceedings and defendants 2 and 3 had not filed written statements. After examining the plaintiff’s arguments and evidence the Court granted a permanent injunction against the release of the defendant’s film.
M.Rajaratnam vs M/S.Raj Video Vision on 10 October, 2024 (Madras High Court)
The petitioners, a partner in the respondent’s partnership firm invoked the arbitration clause for the resolution of disputes, the respondents denied claiming that the dispute is on infringement of copyright, a public law question thus making it non-arbitrable. The petitioners filed a petition under S. 11 of the Arbitration Act for the Court to appoint an arbitrator claiming that it is not an infringement dispute, but a dispute concerning the running of the partnership firm. The Court held that the locus of the dispute is not infringement, but a claim that the copyright belonging to the partnership firm are being exploited by the second respondent for his personal benefit; consequently depriving the firm and thus the Court ordered the appointment of an arbitrator.
Firoz Hira Manik vs State Of U.P. on 17 October, 2024 (Allahabad HC)
A bail application was filed pursuant to a charge under S. 63 of the Copyright Act and S. Sections 318(4)/338//336(3) of the Bharatiya Nyay Sanhita. The case concerns the alleged infringement of the trademark “Vimal Paan Masala” by the applicant by making duplicate Vimal Paan Masala, and selling it for half the price. The Applicant contended that no video recording of seizure has been done as required under S. 105 of the BNS and Section 338 will not apply as there is no allegation of forgery of valuable security. Further, the accused has been in jail since 11.09.2023 and if granted, he will not misuse it. The Court granted the bail considering non compliance with the conditions under Section 105 and the fact that the applicant has been imprisoned since 11.09.2023..
Galatta Media Private Limited vs Nian Media Private Limited on 19 October, 2024 (Madras High Court)
The defendant sought vacation of an interim injunction granted against it in a copyright dispute. The Defendants contended that the plaintiff had not established ownership, and in any case, the impugned display or exhibition of allegedly infringing material was incidental and transient in the cinematographic films of the defendant. This, they argued, is exempted under S. 52(1)(a)(iii) of the Copyright Act. Further, they also argued S. 52(1)(u) as the photographs were exhibited fleetingly, i.e. for a few seconds. The Plaintiffs relied on the fact that S. 52 is to be used when the work is used for criticism or comment, and that the Defendant had used the photos not “incidentally” but for the entire duration of the film. The Court rejected the claims of the Defendant by holding the balance of convenience in favour of the plaintiff as the balance is in favour of deletion of the infringing material since continued infringement until final disposal would cause irreparable hardship especially in view of the wide viewership claimed by the defendant.
Sporta Technologies Pvt. Ltd., And Anr. vs John Doe And Others on 16 October 2024 (Delhi High Court)
The plaintiffs, proprietors of the “DREAM11” trademark, filed a suit seeking a permanent injunction against the defendants for using the deceptively similar marks “Dreams11” and “Dreams11Exch,” which were linked to illegal betting activities. No written statements were submitted by the defendants. The Court found a clear case of infringement and passing off, and found the case fit for summary disposal thereby granting a permanent injunction restraining the defendants from using any marks similar to the plaintiffs’ trademarks. Additionally, the Court awarded actual costs to the plaintiffs.
M/S Abbott Gmbh vs Registrar Of Trademarks & Anr. on 22 October 2024 (Delhi High Court)
The appellant, proprietor of the “BRUFEN” trademark, challenged the registration of the mark “MEBUFEN,” claiming deceptive similarity. The Court found no structural or phonetic similarity between the marks and concluded that the shared suffix “FEN” derives from the common ingredient “IBUPROFEN.” Thus, the Court dismissed the appeal, upholding the Registrar’s order granting registration to “MEBUFEN.”
Ravinder Pal Singh vs Anil Gosai And Ors on 19 October 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against the defendants for trademark infringement and passing off concerning the “Johnson” trademark used for knitting pins and related products. The Court held that the plaintiff failed to prove prior usage of the trademark “Johnson”” and dismissed the suit, noting that the defendants had lawfully used the mark.
L Oreal v. M/S Oneness Enterprises on 19 October, 2024 (Delhi District Court)
An infringement suit was filed against the defendants alleging dishonest adoption of the plaintiff’s ‘“L’OREAL” and other trademarks. It was alleged that the defendant used the impugned marks on their counterfeit goods thereby causing confusion and deception amongst the consumers. The Court held that the trademark and copyright of the plaintiff required protection and since the plaintiff’s evidence went uncontroverted, the Court decided in its favour based on preponderance of probability and granted permanent injunction against the defendants.
Beauty v. The State of Jharkhand on 21 October, 2024 (Jharkhand High Court)
The petitioner filed this suit seeking anticipatory bail, apprehending her arrest as per ss. 405, 406, 418, 149, 420 of the IPC, s. 63 of the Copyright Act, 1957 and s. 103 of the Trade Marks Act, 1999. She initially ran a school under the name KIDZEE under a franchisee agreement, and after its expiry, began running a school under the name KIDGEE. She argued that since she was running a school, there was no possibility of her fleeing away from justice. Considering the nature of allegations and also the fact that she was a female, the Court granted an anticipatory bail.
M/S SKR Food Products v. The Controller General of Patent on 14 October, 2024 (Madras High Court)
The petitioner was the registered proprietor of the trademark “JUBILEE DIAMOND”. The 3rd respondent filed an application for registration of the same mark in his favour. The petitioner opposed the same, but it was not done within the prescribed time period of four months. Accordingly, the opposition was not considered by the Trademark Registry. Via this writ petition, the petitioner sought the Madras High Court to issue a direction to the 1st and 2nd respondents to consider the objections made. The Court held that since the opposition was filed after the four month limitation period, it was rightly disregarded. Dismissing the writ petition, the Court also held that the petitioner was at liberty to file an appeal before the Appellate Board under s. 91 of the Trademarks Act.
Press Trust Of India Ltd vs News Hub Through on 23 October, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against the defendant for reproducing its proprietary news content without authorization, violating Section 51 of the Copyright Act. The plaintiff claimed that the defendant was not a subscriber to the plaintiff’s subscription agreement/license for receiving news content and copied its content verbatim, despite a cease-and-desist notice. The Court held that the plaintiff had proved its case, granting a permanent injunction and awarding compensatory damages, punitive damages, along with pendente lite and future interest to the plaintiff.
Laborate Pharmaceuticals India Ltd vs Sgs Pharmaceuticals Pvt. Ltd on 23 October, 2024 (Delhi District Court)
The plaintiff, owner of the trademark LABDIC RELIEF, sought a permanent injunction against the defendant for trademark infringement and passing off its product. The defendant marketed an analgesic, DICLOZEN RELIEF, with similar packaging and use of the word “RELIEF.” The defendant argued that “RELIEF” is a generic term in pharmaceuticals and that prescription requirements of both the analgesic products will prevent confusion. The court ruled that while “RELIEF” is common, the plaintiff’s product had gained distinctiveness, and the defendant’s product was a deliberate copy likely to confuse consumers. The court granted a permanent injunction in favour of the plaintiff.
Nav Jagriti Niketan Education Society vs New Sethi Stores And Anr on 22 October, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction to stop the defendants from unlawfully using its registered trademarks “DIS” and “DIS logo” in relation to school uniforms and education accessories. The defendants countered that the trademarks were not registered under Class 25 (for uniforms) and that their use did not cause confusion. The court rejected the defendants’ argument regarding the classification of goods, observing that the classification system is merely administrative, and the real test is as to how a consumer shall treat particular trade mark w.r.t. the goods and services. The court granted the permanent injunction in favour of the plaintiff and held that defendants’ use of the impugned trademarks is likely to cause confusion among students and parents.
Smc Nova Estate Private Limited vs Surya Marketing Company on 23 October, 2024 (Delhi High Court)
The case concerned a petition challenging a previous order denying the right of the petitioner (then defendant) to cross-examine the prosecution witness, and to lead evidence as defendant in the suit. Previously, the Court had granted an ad interim injunction against infringement of the respondent/plaintiff’s trademark over NOVA; further confirmed by the Commercial Court. The Court denied the request of the petitioner owing to multiple adjournments taken by them previously. The Court also held that allowing the petitioner’s request will be against the purpose of Commercial Courts to expedite disposal of commercial matters.
Giorgio Armani Spa vs Fazal Ahmad Sayyed on 18 October, 2024 (Delhi District Court)
The plaintiff alleged infringement of its trademark- Emporio Armani, by the defendants who have been using several associated names such as Emporio Armani, Armani, Armani Jeans. Previously an ex-parte interim injunction was granted to the plaintiff and the Court decreed the suit, passing the present summary judgment considering that several goods were seized from the defendant’s premises, and the defendant’s continue to remain ex parte.
Yahoo Inc vs Omkar Cottage Industries on 23 October, 2024 (Delhi High Court)
The Plaintiff sought a permanent injunction for the use of its trademark over Yahoo being infringed by “Yahoo! Mouth Freshners”, a product of the defendant. The Court had earlier granted an ex parte ad interim injunction and by this order decreed the suit in favour of the plaintiff directing the defendant to pay damages and legal costs of the plaintiffs. The Court noted that the defendant was trying to piggyback on the reputation of the plaintiff and that the Yahoo! trademark had been associated with a well established history of technology services. Further, it also recognised that the defendant had previously applied for trademark registration for Yahoo! Mouth Freshners and the same had been denied.
Mehboob Ahmad & Anr. vs Muneer Ahmad & Ors. on 23 October, 2024 (Delhi High Court)
The petitioner challenged an order by the ADJ allowing the respondents to introduce additional documents. The petitioner had alleged trademark infringement by the respondents for using similar marks, including “Bharat” and “B-444,”. The respondents introduced additional documents to support their claim of prior use, but the petitioners contended that these were submitted late and contained discrepancies. The trial court admitted the documents, holding that they merely reinforced existing claims. The High Court dismissed the petition giving the reasoning that the petitioners accepted costs imposed by the trial court, thereby waiving their right to contest the order.
Grey Matters Educational Trust vs Examiner Of Trade Marks on 23 October, 2024 (Delhi High Court)
The appellant challenged the rejection of their trademark application for “Planet E School”. They claimed that their mark was visually, phonetically, and structurally distinct from similar marks cited by the respondent and requested registration limited to the State of Punjab. The respondent contended that the mark would likely cause confusion with pre-existing marks featuring “Planet,” particularly in the educational services category. The Court observed that the defendant’s rejection of the mark lacked detailed reasoning and emphasized the anti-dissection rule, which requires trademarks to be evaluated as a whole rather than by individual elements. The Court allowed the appeal, set aside the Registry’s order and allowed the appellant to proceed with registration limited to Punjab, with the condition that the appellant would not claim exclusive rights over the word “Planet” alone.
Cosmos Premises Pvt. Ltd. v. Novex Communications Pvt. Ltd on 21 October, 2024 (Bombay High Court)
The complainant alleged that there had been infringement of copyright of sound recording in which it held on-ground performance rights. The accused company organized events within their premises in which the songs assigned to the complainant were played. The Court held that under s. 69(2) of the Copyright Act, 1957, the complainant is required to disclose specific allegations against the officer of the company who is responsible for the alleged offence under s. 69(1) of the Copyright Act, 1957. In the present case, apart from mentioning that the persons were directors/managers of the accused company, no specific allegations were mentioned against them so as to impute vicarious liability. Accordingly, the Court decided that there was non-application of mind by the Magistrate in holding the officers liable without there being specific allegations against them. Using its inherent powers under s. 482 CrPC, the Court set aside the Magistrate’s order.
Raju Saxena @ Rajendra v. State Of U.P. on 22 October, 2024 (Allahabad High Court)
The applicant filed a bail application after his arrest for offences under ss. 274, 275, 318(4), 336(3), 336(4), 338, 340(2), 3(5) of B.N.S.S., and ss. 60, 63, 72 of Excise Act and ss. 63, 65 of Copyright Act, 1957. He stated that the arrest was not made at the spot and his name was disclosed by the co-accused. Further, he had no concern with the alleged incident and no illicit liquor was recovered from his possession. The Court granted him bail after perusing his record and on the ground that there was no reasonable apprehension of him tampering with the evidence or intimidating the witnesses.
Levi Strauss Co. v. Ashok Kumar on 24 October, 2024 (Delhi District Court)
The plaintiff filed a suit seeking decree of permanent injunction and alleged infringement of its “Levi’s” trademark by the defendant. The defendant allegedly manufactured and sold counterfeit products using the plaintiff’s trademark. On the basis of the local commissioner’s report and evidence of the plaintiff, the Court concluded that the defendant had infringed the trademark of the plaintiff and granted a permanent injunction against the defendant.
Other IP Developments
- Biodiversity Rules 2024 notified by Ministry of Environment, Forest and Climate Change.
- Bombay High Court declares Girnar as a well known trademark.
- A Mumbai Court acquits accused in a 33 old copyright infringement case after witnesses remain untraceable.
International IP Developments
- The Wall Street Journal and the New York Post file copyright infringement law suit against Perplexity AI.
- “Blade Runner 2049″‘s producers allege copyright infringement by Tesla for using similar imagery as the movie, in their Cybercab launch event.
- Nike ordered to pay attorney’s fees in their “Cool Compression” trademark dispute with Lontex Corp.
- Jury awards USD 250 to Apple in their patent infringement dispute with Masimo.